EFF Wins Final Victory Over Podcasting Patent

Back in early 2013, the podcasting community was freaking out. A patent troll called Personal Audio LLC had sued comedian Adam Carolla and was threatening a bunch of smaller podcasters. Personal Audio claimed that the podcasters infringed U.S. Patent 8,112,504, which claims a “system for disseminating media content” in serialized episodes. EFF challenged the podcasting patent at the Patent Office in October 2013. We won that proceeding, and it was affirmed on appeal. Today, the Supreme Court rejected Personal Audio’s petition for review. The case is finally over.

We won this victory with the support of our community. More than one thousand people donated to EFF’s Save Podcasting campaign. We also asked the public to help us find prior art. We filed an inter partes review (IPR) petition that showed Personal Audio did not invent anything new, and that other people were podcasting years before Personal Audio first applied for a patent.

Meanwhile, Adam Carolla fought Personal Audio in federal court in the Eastern District of Texas. He also raised money for his defense and was eventually able to convince Personal Audio to walk away. When the settlement was announced, Personal Audio suggested that it would no longer sue small podcasters. That gave podcasters some comfort. But the settlement did not invalidate the patent.

In April 2015, EFF won at the Patent Office. The Patent Trial and Appeal Board (PTAB) invalidated all the challenged claims of the podcasting patent, finding that it should not have been issued in light of two earlier publications, one relating to CNN news clips and one relating to CBC online radio broadcasting. Personal Audio appealed that decision to the Federal Circuit.

The podcasting patent expired in October 2016, while the case was on appeal before the Federal Circuit. But that wouldn’t save podcasters who were active before the patent expired. The statute of limitations in patent cases is six years. If it could salvage its patent claims, Personal Audio could still sue for damages for years of podcasting done before the patent expired.

On August 7, 2017, the Federal Circuit affirmed the PTAB’s ruling invalidating all challenged claims. After this defeat, Personal Audio tried to get the Supreme Court to take its case. It argued that the IPR process is unconstitutional, raising arguments identical to those presented in the Oil States case. The Supreme Court rejected those arguments in its Oil Statesdecision, issued last month. Personal Audio also argued that EFF should be bound by a jury verdict in a case between Personal Audio and CBS—an argument which made no sense, because that case involved different prior art and EFF was not a party.

Today, the Supreme Court issued an order denying Personal Audio’s petition for certiorari. With that ruling, the PTAB’s decision is now final and the patent claims Personal Audio asserted against podcasters are no longer valid. We thank everyone who supported EFF’s Save Podcasting campaign.

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